The Importance of Trade Marks

In the case of Link Up Mitaka Ltd (trading as The Bigword) v Language Empire Ltd and another the defendant was ordered to pay £142,044 in damages as a result of setting up, maintaining and using two websites.

The claimant provided translation and interpretation services in the UK and the EU (amongst other places) under and by reference to two trade marks: (i) UK trade mark no. 25708002 for 'THEBIGWORD'; and (ii) EU trade mark no. 010478972 for 'thebigword'. The first defendant company also carried on the business of providing translation and interpretation services in, among other places, the UK (the second defendant was the sole director and shareholder of the first defendant.)

The claimant brought a claim against the defendants, alleging that they had infringed the trade marks by setting up, maintaining and using two websites whose names infringed on the Trade Marks. The defendants did not file a defence and the claimant obtained judgment in default. A hearing was held to determine the level damages and to place the websites into the claimant’s ownership.

The following issues were decided:

1. Whether the defendants had made any sales of translation and/or interpretation services, as a result of enquiries made from potential customers who had visited the websites. The court ruled yes. On the balance of probabilities, the defendants had converted enquiries from the websites into significant sales.
2. Whether the claimant had been deprived of the said sales identified. The Court ruled yes. It could properly be inferred that each and every lost sale had been a sale that the claimant would have made. In all the circumstances, the claimant was entitled to the sum of money which would put it in the same position it would have been in if it had not sustained the wrong. Following settled law, the proper approach was to assess what would have happened had the tort not been committed and to compare that with what had actually happened. It was clear from the evidence of a 50% increase in traffic to the claimant's website after the websites had been taken down, that those websites had been diverting significant numbers of potential customers away from the claimant's website. Even if half of that traffic increase was attributable to another unknown cause, that was still a highly significant increase in traffic.

The registration of the name and/or logo of your business as a trade mark makes it far easier to ensure you can protect your business if another entity were to try and use a similar or identical mark. If you would like advice on registering a Trade Mark then please contact Oliver Kew.

Published on 25/10/2018